Hulu Lawsuit Targets TiVo

Hulu has filed a lawsuit in California against TiVo that asks the court to find that Hulu isn’t required to renew an expired licensing deal because three TiVo patents asserted against Hulu in an earlier case have either expired, are no longer valid, or are linked to a service that Hulu no longer offers.

According to a redacted copy of the complaint, obtained by Multichannel News and filed with the U.S. District Court for the Northern District of California on May 23, Hulu is requesting a judgment that it does not infringe any claim of Patent No. 7,769,775, which describes a “Search engine for video and graphics with access authorization” and was granted in 2010.

The idea behind the '775 patent, Hulu explained, is to aid searching across websites for graphic and video content and is mostly relatable to tech needs “in the late 1990s.” Additionally, the patent, as Hulu views it in the court filing, aimed to help internet search engines at the time determine whether graphic or video files require authorization to access them or if they are not saddled with access restrictions.

Hulu, which recently launched a beta version of a new live TV service, argued that its current product offering, which includes ad-free and ad-supported versions of an SVOD service, is “completely different from the system and method claimed by the ’775 Patent,” as Hulu does not need to search the Internet for videos, as its system now obtains the requisite input/metadata directly from content providers. Hulu also holds that its system is also free of the ‘775 patent because it’s not possible to use Hulu services without authorization, such as a subscription.

Rovi, which has been using the TiVo brand since completing its merger with TiVo in September 2016, and Hulu have duked it out before. In 2011, Rovi alleged that Hulu was infringing on three patents – the ‘775 patent, as well as No. 6,396,546 (Electronic television program guide schedule system and method); and 7,103,906 (User controlled multi-device media-on-demand system). In 2013, Hulu and Rovi entered a settlement and a licensing agreement.

“Since the parties signed that agreement, circumstances have changed such that Hulu doubts the applicability of the TiVo Defendants’ patents to Hulu, the validity of patents, and the market value of a license to the portfolio,” Hulu said in the complaint.

Hulu said TiVo sent it a “Notice of Expiration” on March 14 stating that Hulu must renew its license, along with a “good faith negotiation period,” after which TiVo could sue Hulu. That period ended on May 22, Hulu said.

“Other than the three patents asserted in the prior litigation, the TiVo Defendants have not identified any other patents that they believe Hulu infringes,” Hulu argued.

In addition to a declaratory judgment that Hulu doesn’t infringe any valid claim of the ‘775 patent, Hulu is also asking the court to declare that TiVo is “in breach of one or more sections of the Patent License Agreement.”

Hulu also pointed out in the lawsuit that TiVo (then still known as Rovi) formed a deal with Intellectual Ventures in February 2016 whereby Rovi could offer patent portfolios under a unified program to focus on OTT offerings, with Rovi as the exclusive partner for IV.

Roku’s recent renewal with TiVo included the IV patent portfolio. Netflix and HBO have also signed similar agreements with TiVo.